Reposted for Rod Dixon: Re: [wg-c] trademark law & new gTLDs

[Jonathan Weinberg <weinberg@mail.msen.com>]

reposted for Rod Dixon
------------------------------------

Query: since "famous" TMs like "Ford" will pose an unsurmoutable barrier
regardless of the number of TLDs, are we back to the conclusion that the TM
issues will not be resolved by adding to the TLD namespace? If you consider
that the Internet is bound to add to the number of so-called famous marks,
and consider that famous marks can arguably occupy the field of SLD
namespaces under the theory of dilution, are we simply racing against a
clock? In other words, the TM owners have already "won" the domain name war
unless we think out of the box on this one. Value-added TLDs need to be
given moe consideration, IMHO.
>
> OTOH, this isn't the trademark owners' fault.  It's valuable that
> consumers not be confused when it comes to the origin of products, and the
> fact is that consumers may be confused by a www.ford.com not in the hands
> of the Ford Motor Company (although, come to think of it, other consumers
> might be confused by a www.ford.com not in the hands of the modeling
> company, and other (Hungarian) consumers might be confused by a
> www.budweiser.com that *is* in the hands of Anheuser-Busch . . . ) The
> problem is that consumers today tend to assume that www.foobar.com is
> operated by whatever company named "foobar" they happen to be thinking
> about at the moment.
>
> What's the answer?  You got it - MORE gTLDs.  In meatspace, consumers cope
> just fine with the fact that there are a lot of businesses named Acme.
> They know about the various businesses; they don't expect any particular
> Acme to be the particular one they have in mind; and they don't get
> confused.  If consumers learned that there were a lot of different domains
> on the web named www.acme.sometld, they wouldn't expect any particular one
> to belong to Warner Brothers (which has a variety of U.S. registrations
for
> "acme") or to Jef Poskaner (who in fact owns the acme.com domain), or the
> Acme Glass Company, or anybody else.  The mere existence of the domain
name
> would no longer be confusing.  Further, we can achieve this result without
> regard to whether the new TLDs we add are "chartered," as Kent suggests,
or
> general-purpose.  (Now, if I have a domain named ford.biz, *and* I use
> www.ford.biz to sell cars, then plainly people will be confused no matter
> how many gTLDs there are.  That's trademark infringement.  But that's a
> different case.)
>
> Jon
>
>
> Jonathan Weinberg
> weinberg@msen.com


Rod Dixon, J.D., LL.M.
Visiting Assistant Professor of Law
Rutgers University School of Law - Camden
rod@cyberspaces.org
http://www.cyberspaces.org